DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-20 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8 and 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 8 and 9 are indefinite for reciting “the cigar when in the flat orientation” because it is unclear whether the claims are now positively reciting the inclusion of a cigar as a structural element to the kit. Claim 1 is directed to a cigar smoking kit comprising one or more flaps configured for wrapping around a cigar when in the flat orientation, and is not considered to actually require a cigar. This limitation only regards the intended use of the claimed flaps of the ashtray, as discussed below in further detail, and the limitation does not add the structural component of “a cigar” to the claim. Therefore, it would appear that the cigar when in the flat orientation is merely directed to when a cigar is positioned in the kit and not that the kit requires a cigar as a structural component. As such, for purposes of examination, the claims will be interpreted as the cedar spills and cigar spikes are located between the ashtray and the one or more flaps configured for wrapping around a cigar when in the flat orientation.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Examiner’s note: Claims 1, 3, 11, 13, and 20 recite limitations of the collapsible paper ashtray with “configured for” which is considered to be a limitation regarding the intended use of the claimed ashtray. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963); MPEP § 2115. Therefore, for the purposes of this Office action, the limitations will be interpreted as if they required “a paper ashtray…
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Leeuwen (US 3275130 A) in view of Person (US 20130052397 A1) and Strasheim (US 20090183742 A1)
Regarding Claim 1, Leeuwen discloses a smoking kit, comprising:
a collapsible paper ashtray configured for being folded into a flat orientation and configured for being folded into a working ashtray (A collapsable pouch is provided, formed by paper layers 11 and 13, into which ashes are deposited. Col 1, lines 46-47; col 2, lines 1-13; Fig 2);
the ashtray comprising one or more flaps configured for wrapping around a cigar when in the flat orientation (Cover 10 and paper layer 17 form flaps and would be capable of wrapping around a cigar when the ash catcher is in a flat orientation. Col 1, lines 37-47; col 2, lines 1-2; Fig 2);
one or more match strike surfaces disposed on an exterior surface of the ashtray (striking strip 20 positioned on fold 19. Col 2, lines 4-6; Fig 1); and
one or more matches securely attached to the ashtray (matches 18 are secured between the fold 19 and the back of the cover 10. Col 1, lines 35-48; Fig 2).
Leeuwen does not explicitly disclose one or more cedar spills and/or one or more cigar spikes securely attached to the package. However, Person teaches that cedar spills are commonly provided with cigars ([0004]), and Strasheim teaches that cigar pokers may be thin rods which are used with cigars to improve airflow of a cigar. ([0041]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the smoking kit of Leeuwen with the inclusion of cedar spills such as those taught by Person and with the cigar pokers such as those taught by Strasheim because Leeuwen, Person, and Straheim are all directed to cigar smoking paraphernalia, Person and Straheim teach the use of cedar spills and cigar pokers as simple tools commonly used with cigars, and this merely involves applying known cigar smoking paraphernalia kit components to a similar smoking paraphernalia kit to yield predictable results.
Regarding Claim 2, Leeuwen discloses wherein the collapsible paper ashtray comprises a sheet of paper with a protective coating (paper layer 11 is secured to a metalized layer preferably of aluminum foil. Col 1, lines 37-41; Fig 2).
Regarding Claim 3, Leeuwen discloses wherein the one or more flaps comprise a pair of opposing flaps configured for wrapping around the cigar (Cover 10 and paper layer 17 form a pair of flaps and would be capable of wrapping around a cigar. Col 1, lines 37-47; col 2, lines 1-2; Fig 2).
Claims 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Leeuwen in view of Person and Strasheim, and in further view of Cohn (US 3838989 A).
Regarding Claim 4, Leeuwen discloses a striking strip as discussed in Claim 1 but does not explicitly disclose wherein surface comprises red phosphorus. However, Cohn teaches wherein a match strike surfaces comprise red phosphorus (a dried strip of striking material may conventionally be a mixture of red phosphorus. Col 2, lines 19-20).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the striking strip of Leeuwen to comprise red phosphorus as taught by Cohn because Leeuwen and Cohn are both directed to smoking articles comprising match strike strips, Cohn teaches the use of red phosphorous as the striking material for matches, and this merely involves applying a known match kit component to a similar match kit to yield predictable results.
Regarding Claim 5, Leeuwen discloses wherein the one or more match strike surfaces are disposed on an exterior surface of the ashtray when said ashtray is folded into a flat orientation or into a working ashtray (striking strip 20 is positioned on fold 19 such that it is disposed on an exterior surface of the ashtray when folded flat. Col 2, lines 4-6; Fig 1).
Regarding Claim 6, Leeuwen discloses wherein the ashtray comprises one or more slits (fold 19 and the back of the cover 10 form a slit therebetween. Col 1, lines 35-37; Fig 2).
Regarding Claim 7, Leeuwen discloses wherein the one or more matches are located within the one or more slits and thereby securely attached to the ashtray (paper matches 18 are secured between fold 19 and the back of cover 10. Col 1, lines 35-37; Fig 2).
Regarding Claims 8 and 9, Leeuwen discloses wherein the matches are located between the ashtray and one or more flaps (paper matches 18 are secured between the fold 19 and the back of cover 10. Col 1, lines 35-48; Fig 2) but does not explicitly disclose the location of other components such as the cedar spills of Person or the cigar pokers of Strasheim. However, given that the location of the cedar spills of Person or the cigar pokers of Strasheim merely involves the rearrangement of the cedar spills and cigar pokers, the modification would be obvious to one having ordinary skill in the art. A person of ordinary skill in the art would find the rearrangement of cedar spills and cigar pokers in a smoking kit an obvious matter of design choice. See MPEP 2144.04(VI)(C). Moreover, Leeuwen already teaches thin elongate components of the kit (i.e. the matches) may be located between the ashtray and one or more flaps. Therefore, it follows that a person having ordinary skill in the art, through rearrangement of the cedar spills of Person and/or the cigar pokers of Strasheim, would arrive at securing the components between the ashtray and one or more flaps as claimed, absent evidence to the contrary.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Leeuwen in view of Person, Strasheim, and Cohn, and in further view of Donos (US 20040074787 A1).
Leeuwen discloses wherein the upwardly extending members 26 and 27 fold at crease lines 15 (Col 2, lines 10-14; Fig 2) but does not explicitly disclose wherein the sheet of paper includes printed lines indicating how the paper should be folded into the flat orientation or into the working ashtray. However, Donos teaches a similar foldable ash tray wherein the sheet of paper includes marked lines indicating how the paper should be folded into a flat orientation or into a working ashtray (The fold lines may be marked. [0006]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the creases of the ashtray of Leeuwen with marked lines as taught by Donos because Leeuwen and Donos are both directed to foldable paper ashtrays, Donos teaches the use of marked lines to indicate the foldable creases in a paper ashtray, and this merely involves applying a known paper ashtray component to a similar paper ashtray to yield predictable results.
Claims 11-13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over McCaskey (US 1215291 A) in view of Galoyan (US 20080121243 A1), Leeuwen, Person, and Strasheim.
Regarding Claims 11 and 20, McCaskey discloses a smoking kit, comprising:
a cigar (main compartment 10 holds cigars. Page 1, lines 94-96; Fig 4),
one or more match strike surfaces disposed on an exterior surface of the kit (a portion of the front of the case is provided near its top with a substance which may be struck by matches. Page 2, lines 28-32); and
one or more matches securely attached to the kit (supplement compartment 12 holds matches. Page 1, lines 105-109; Fig 4).
McCaskey does not disclose a paper ashtray. However, Galoyan discloses a smoking kit, comprising:
a collapsible paper ashtray configured for being folded into a flat orientation and configured for being folded into a working ashtray (A collapsible disposable ashtray made of thin, foldable and fire-retardant material which can be unfolded for usage. [0007], Fig 2) and
the ashtray comprising one or more flaps configured for wrapping around the cigar when in the flat orientation (The disposable ashtray can be folded into a flat orientation and attached to the smoking article pack with pull tabs along the edge. [0008], Fig 3).
Moreover, Leeuwen also discloses a similar smoking kit, comprising:
a collapsible paper ashtray configured for being folded into a flat orientation and configured for being folded into a working ashtray (A collapsable pouch is provided, formed by paper layers 11 and 13, into which ashes are deposited. Col 1, lines 46-47; col 2, lines 1-13; Fig 2);
the ashtray comprising one or more flaps configured for wrapping around a cigar when in the flat orientation (Cover 10 and paper layer 17 form flaps and would be capable of wrapping around a container comprising a cigar when the ash catcher is in a flat orientation. Col 1, lines 37-47; col 2, lines 1-2; Fig 2);
one or more match strike surfaces disposed on an exterior surface of the ashtray (striking strip 20 positioned on fold 19. Col 2, lines 4-6; Fig 1); and
one or more matches securely attached to the ashtray (paper matches 18 are secured between the fold 19 and the back of the cover 10. Col 1, lines 35-48; Fig 2).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the smoking kit of McCaskey with a collapsable paper ashtray attached to the container as taught by Galoyan and/or the collapsable ashtray attached to a package comprising matches and a striking strip of Leeuwen because McCaskey, Galoyan, and Leeuwen are all directed to smoking paraphernalia containers, Galoyan and Leeuwen teach the use of collapsible paper ashtrays in conjunction with smoking paraphernalia containers including containers for cigars and matches, and this merely involves applying known cigar smoking paraphernalia compartment components to a similar smoking paraphernalia compartment to yield predictable results.
McCaskey also does not explicitly disclose one or more cedar spills and/or one or more cigar spikes securely attached to the package. However, Person teaches that cedar spills are commonly provided with cigars ([0004]), and Strasheim teaches that cigar pokers may be thin rods which are used with cigars to improve airflow of a cigar. ([0041]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the smoking kit of McCaskey with the inclusion of cedar spills as taught by Person and cigar pokers as taught by Strasheim because McCaskey, Person, and Straheim are all directed to cigar smoking paraphernalia, Person and Straheim teach the use of cedar spills and cigar pokers as simple tools commonly used with cigars, and this merely involves applying a known cigar smoking paraphernalia kit component to a similar cigar smoking paraphernalia kit to yield predictable results.
Regarding Claim 12, Leeuwen discloses wherein the collapsible paper ashtray comprises a sheet of paper with a protective coating (paper layer 11 is secured to a metalized layer preferably of aluminum foil. Col 1, lines 37-41; Fig 2).
Regarding Claim 13, Leeuwen discloses wherein the one or more flaps comprise a pair of opposing flaps configured for wrapping around the cigar (Cover 10 and paper layer 17 form flaps and would be capable of wrapping around a cigar container when the ash catcher is in a flat orientation. Col 1, lines 37-47; col 2, lines 1-2; Fig 2).
Claims 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over McCaskey in view of Galoyan, Leeuwen, Person, and Strasheim, and in further view of Cohn.
Regarding Claim 14, McCaskey discloses a striking strip as discussed in Claim 1 but does not explicitly disclose wherein the strike surface comprises red phosphorus. However, Cohn teaches wherein a match strike surface comprises red phosphorus (a dried strip of striking material may conventionally be a mixture of red phosphorus. Col 2, lines 19-20).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the striking strip of McCaskey to comprise red phosphorus as taught by Cohn because McCaskey and Cohn are both directed to smoking articles comprising match strike strips, Cohn teaches the use of red phosphorous as the striking material for matches, and this merely involves applying a known match kit component to a similar match kit to yield predictable results.
Regarding Claim 15, Leeuwen further discloses wherein the one or more match strike surfaces are disposed on an exterior surface of the ashtray when said ashtray is folded into a flat orientation or into a working ashtray (striking strip 20 is positioned on fold 19 such that it is disposed on an exterior surface of the ashtray when folded flat. Col 2, lines 4-6; Fig 1).
Regarding Claim 16, Leeuwen discloses wherein the ashtray comprises one or more slits (fold 19 and the back of cover 10 form a slit therebetween. Col 1, lines 35-37; Fig 2).
Regarding Claim 17, Leeuwen discloses wherein the one or more matches are located within the one or more slits and thereby securely attached to the ashtray (paper matches 18 are secured between fold 19 and the back of cover 10. Col 1, lines 35-37; Fig 2).
Regarding Claims 18 and 19, McCaskey discloses wherein matches are securely attached to the smoking kit container (supplement compartment 12 holds matches. Page 1, lines 105-109; Fig 4) but does not explicitly disclose the location other kit components such as the cedar spills of Person or the cigar pokers of Strasheim. However, given that the location of the cedar spills of Person or the cigar pokers of Strasheim merely involves the rearrangement of the cedar spills and cigar pokers, the modification would be obvious to one having ordinary skill in the art. A person of ordinary skill in the art would find the rearrangement of the cedar spills and cigar pokers in a smoking kit an obvious matter of design choice. See MPEP 2144.04(VI)(C). Moreover, McCaskey already teaches that thin elongate elements (i.e. matches) may be located in a compartment on the kit container and Leeuwen already teaches that thin elongate elements (i.e. matches) may be located between the ashtray and the one or more flaps. Therefore, it follows that a person having ordinary skill in the art, through rearrangement of the cedar spills of Person or the cigar pokers of Strasheim, would arrive at securing the components between the ashtray and one or more flaps as claimed, absent evidence to the contrary.
Conclusion
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/JEFFREY A. BUCKMAN/ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755